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The law of urinal trademarks

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Opinion Zone,David Horrigan

Trademarks and the legal disputes involving them may be the most entertaining area of intellectual property law, and a recent Pennsylvania federal court case illustrates just how entertaining trademark fights can be.  You might think this fight over the name, “Pint,” was a beer dispute.  You would be wrong.  This week’s Case of the Week examines what happens when two urinal manufactures get into a legal dispute over the names of their products.

Pint of Yellow Liquid

The urinal and its bathroom cousin, the toilet, use a lot of water. As people have become more concerned about the environment, manufactures have joined the party, developing so-called “green” products, and urinal makers are no exception.  After all, no self-respecting urinal manufacturer wants to be known as a truck stop eco-terrorist.

Among the leaders in the urinal market are Zurn Industries and Sloan Valve Co. Both Zurn and Sloan wanted to help save the planet by making eco-friendly urinals.

Zurn developed a urinal Mother Nature would love and named it, “The Pint.”  The U.S. Patent and Trademark Office awarded Zurn the United States Trademark Registration No. 3,389,517 for The Pint, part of Zurn’s EcoVantage line of environmentally friendly fractional flush urinals.  They’re called “fractional flush” because they use a fraction of the water regular urinals use when you flush them.

Not to be outdone, the nature-loving folks at Sloan came out with their own environmentally sound urinal, the “Sloan 1 Pint Urinal System.”

Not unlike a fraternity pledge spotting someone swiping his pint of Guinness from the bar, lawyers for Zurn swung into action.

Urinating Contest

After noticing a Sloan press release for the Sloan 1 Pint Urinal System on the website, greenlodgingnews.com, Zurn’s lawyers sent Sloan a cease and desist letter, arguing Sloan’s name infringed on Zurn’s registered trademark for The Pint.  Zurn demanded that Sloan stop marketing its allegedly infringing urinal with "pint" in its name.

In an apparent attempt to maintain peace and harmony in the urinal world, Sloan changed the name of its urinal from the “Sloan 1 Pint Urinal System” to the “Sloan Pint Urinal System.”

It was a nice try, but Zurn was unsatisfied.  Simply deleting the numeral, “1,” from the name wasn’t enough.  Not unlike Carrie Nation on a bar raid, Zurn wanted the “Pint” out of there.

Sloan refused, and Zurn’s trademark lawyers did what it takes to become the Case of the Week.  They sued.

In its case, Zurco, Inc. v. Sloan Valve Co., filed in the U.S. District Court for the Western District of Pennsylvania, Zurn argued Sloan’s use of its name violated the federal Trademark Act of 1946, known commonly as the Lanham Act.  Specifically, Zurn argued that Sloan’s name caused a likelihood of confusion among potential customers.

Sloan countered that—despite Zurn’s federal trademark registration—“The Pint” was not a legally protectable trademark for a urinal because the mark was “generic,” a trademark legal term meaning the name is a common, general term with no secondary meaning.

Sloan argued that “pint” was merely an identification of a type of urinal—one that uses one pint of water when flushed.  Thus, Sloan argued, urinal purchasers would associate the term, pint, with the flush volume of the urinal, not the maker of the urinal, Zurn.

In attempting to decide the dispute between the fighting flushers, the federal court applied the so-called “primary significance test,” used in many cases, including A.J. Canfield Co. v. Honickman. Under the primary significance test, the court determines whether the primary significance of a term in the minds of the consuming public is the product or the producer.

The court illustrated the difference by citing E.T. Browne Drug Co. v. Cococare Products, Inc., where the court made the distinction that “cola” was generic because it described a product, but “Pepsi-Cola” is not generic because it describes the producer.

Zurn disputed the generic label by noting that, in the toilet and urinal industry, flush volumes are described—not in pints—but with the terms, “gallons per flush (GPF)” and “liters per flush (LPF).”  In fact, Zurn claimed the use of gallon and liter by those other wasteful water-hogs in the toilet and urinal industry was precisely why it chose the unique term, pint.

However, Sloan countered that pint had become an industry standard, noting that American Standard has used “pint” and “1 point” since 2008, Mansfield Plumbing Products has used “1-pint” for its Brevity line of urinals, and Caroma USA had used “one pint” for its Cube Ultra line of urinals for two years.

Unfortunately for Sloan, the court noted that none of those urinal craftsmen had used the term before Zurn introduced the Pint in 2007.  In addition, Zurn argued it had been diligent in sending cease and desist letters to the allegedly infringing urinal producers, a requirement for protection under trademark law.

To Be Continued

In denying motions for summary judgment on most issues, the court held that there were genuine issues of material fact as to whether The Pint was generic.  As a result, the case will move forward, and more evidence about urinals and what people call them can enter the hallowed halls of American jurisprudence.

David Horrigan is a Washington, DC, attorney, editorial director at courtweek.com, and former staff reporter and assistant editor at The National Law Journal.  His articles have appeared also in Law Technology News, The American Lawyer, The New York Law Journal, Corporate Counsel, Texas Lawyer, Florida Lawyer, and Daily Business Review. E-Mail: dhorrigan@courtweek.com

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